| (a) Action may be taken by the Secretary of State to
suspend a pending application for good and sufficient cause, including
a pending proceeding before the United States Patent and Trademark
Office (USPTO) or a court which is relevant to the issue of registrability
of the applicant's mark. An application suspended by the Secretary
of State will be reviewed for any substantive defects and then suspended
for a reasonable amount of time, but not longer than six months. The
applicant will be notified in writing of the reason for the suspension.
The Secretary may suspend the application for additional six-month
periods by notifying the applicant in writing.
(b) On written request of the applicant, the Secretary
of State may suspend action for a period of up to six months, if a
proceeding is pending before the USPTO or a court which is relevant
to the issue of registrability of the applicant's mark. An applicant's
written request for a suspension of action under this section filed
within the 90-day response period may be considered responsive to
an examiner's action.
(c) The request should include the following information:
(1) an identification of the application;
(2) a statement that the applicant requests suspension
of the trademark examination process;
(3) an identification of the pending proceeding including
the name of the court, file name, and cause number; and
(4) a brief statement of the relevance of the pending
proceeding to the application before the trademark examiner.
(d) No later than upon request for suspension, the
applicant should address all objections to registration other than
those on which the suspension is based.
(e) The trademark examiner shall send written notice
of the acceptance or rejection of the request to the applicant. If
the examiner accepts the request, the examiner shall make appropriate
notations on the application file.
(f) The applicant shall notify the Secretary of State
within 20 days of the resolution of any proceeding.
(g) If the proceeding remains pending at the end of
the initial, or any subsequent suspension period, the applicant shall
provide written notice of this fact to the Secretary of State. The
Secretary of State may suspend action for additional periods of up
to six months. If the applicant does not provide notice by the end
of the initial or any subsequent suspension period, the application
will be deemed abandoned.
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